NY Does Not ♥ Others Using its Trademarks

Disclaimer: I am not from New York. I like New York. I do not ♥ New York.

Walk down many streets in Manhattan filled with tourists and you are bound to see numerous tables chockfull of t-shirts and other items emblazoned with the phrase “I ♥ NY.” While this phrase gained prominence and widespread use after the September 11, the mark actually dates back to the mid-1970s. The now-trademarked phrase and logo were designed by Milton Glaser on a contract from the State of New York. In the thirty-eight years since Glaser created this mark, New York has raked in millions of dollars in licensing fees while few others have benefited and many have been hurt.

Empire State Development, the parent agency of the New York Department of Economic Development, holds the trademark for the phrase and design of “I ♥ NY.” This means that only the State of New York or a party that agrees to pay significant licensing fees to the State may use this mark or any phrase confusingly similar. After years of widespread use of the design and similar phrases, the state recently vowed to go after any use of phrases or designs similar to their trademark in an effort to reclaim a mark that has already been severely devalued by such overuse.

In expanding the campaign, New York’s governor recognized the ease of replacing the ♥ with any other inanimate object, including pizza slices, beach balls, or even hot air balloons. This new effort is part of a multi-million-dollar advertising campaign that vows to liberally utilize this iconic phrase. The State of New York has even created a website for the campaign, of course located at iloveny.com.

However, Empire State Development and CMG Worldwide, the agency employed to protect this valuable (and often copied) trademark, have collectively become far more aggressive in not only going after infringing uses of the phrase on shirts and other products, but have also gone after other derivations of the phrase that may not actually be infringing at all. This new overly aggressive stance has angered many New Yorkers, some arguing that the state is profiting at the expense of local businesses, the very entities they should be seeking to support. In one recent example the New York Times profiled the trials and tribulations of Sam Penix and his coffee shop in Manhattan. The store now has “censored” signs over the places on the windows and walls where they used to display the phrase “I [coffee cup] NY,” a clear play on the now-notorious trademark. After threatened litigation from the Department of Economic Development, Penix and others have been bullied in to ceasing their use of these and other phrases and designs. According to the New York Times, there were over 100 similar cases in the state last year. From the state’s perspective, going after this alleged infringing use makes clear financial sense given that the State of New York raked in over $2.5 million in 2012 from licensing agreements for the “I ♥ NY” design.

But from a fairness perspective, this action is utterly inequitable. I understand going after producers and vendors selling unlicensed “I ♥ NY” products such as t-shirts or other tourist tchotchkes, but going after local businesses makes absolutely no sense. Firstly, nobody is confused by the “I [coffee cup] NY” or any other iteration of the phrase replacing the heart with other objects. But perhaps more infuriating is that the state is going after its own local businesses. New York should be encouraging and supporting local businesses, not suing them. So long as the state continues to send cease-and-desist letters and threaten litigation against local businesses, censorship signs such as Mr. Penix’s will continue to be placed in storefront windows throughout New York.

One Response to NY Does Not ♥ Others Using its Trademarks

this clash reminds me of a similar case that began a few years ago: Chik fil a (“eat mor chikin”) went after a Vermont man whose tshirt business sold shirts that said “eat more kale.” Chik fil a argued that they “must legally protect and defend [their] ‘Eat mor chikin’ trademarks in order to maintain rights to the slogan.” But the business owner’s attorney said that it was not “likely to cause confusion of the public and dilute the distinctiveness of Chick-fil-A’s intellectual property…There’s no one out there that’s going to come forward and say, ‘I thought I was buying a Chick-fil-A product but I got this T-shirt.’ ” The line has to be drawn somewhere so that NY can show they are enforcing their trademark, but extending it to cover non-heart objects seems too extreme, since, as you said, there is no confusion.